Patent Examiner Interview

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Happy Monday! I listened with rapt attention to your interview at the Brookings Institution last Thursday the way some people listen to Taylor Swift. I wrote quite a few things down, because I never read a book or listen to an interview without a pen and paper handy lest I forget something important, and plus my 9th grade English teacher Ms. Fritchey (oh, you betcha we had fun with that name and also? Sorry Ms. Fritchey) would kill me if I didn’t. The first thing I wrote down was this:

Deputy Commissioner for Patent Quality coming from the #USPTO? Step in the right direction…

I wrote that down on paper and on Twitter because I think it’s such a great idea. When I interviewed a patent examiner (Part I, Part II, and Part II), s/he said

While I was employed at the USPTO, there were two search systems, called East and West. Examiners would choose which one they wanted to use. These systems searched only the patent database. Now days, most examiners use Google Patent Search, but again that searches only the universe of existing patents.

Prior art search then is 99% patent literature. So that is a huge lesson learned after leaving…technical manuals and publications need to be searched too.

“Oh, brother!” is right.

Emphasis mine, and it speaks to the issue of patent quality directly because good googely woogely, how on earth can you know if an idea is unique if you don’t search in more than one place? To say nothing of the fact that some people couldn’t come up with decent search terms if their very life depended on it. I may know one or five of those people, who can’t even find an address for the nearest pizza shop because they search The Googles for something like “italian pie” or “round thing college kids like to eat” and may I suggest you don’t google that second one from a government computer? I have my reasons.

Quality is a real issue, is what I’m saying, and only partly because the examiners themselves don’t have the tools to do the job. While there are market solutions to this problem, like the studs at Article One Partners, don’t you think it’s time the USPTO upped its game a little on that front? Clearly you do, which is why you suggested a Patent Quality Czar. You can totally steal that title because between you and me, it’s way cooler than “Deputy Commissioner for Patent Quality”.

Not to belabor the point even though I’m totally going to, have you seen this? Where Exxon has patented selling energy, because that’s never been done before and is a completely non-obvious idea? This is exactly the sort of crap the PQC has to stop letting through. His or her first job out to be to check out the flaws in SAWS:

Sensitive Application Warning System (SAWS) that is supposed to flag applications that if issued could be controversial and subject the USPTO to undesired calumny and scorn,

It is highly unlikely that the USPTO wishes to bring calumny and scorn upon itself, that first one especially, now that I looked it up and know what it means. SAWS should have have flagged this application from the get go but it didn’t and someone needs to understand why.

If one of your goals is to reduce nuisance patent litigation, even if you don’t want to call out patent trolls by name, then I think requiring that patent examiners be attorneys is a good first step. Maybe not all of them, but somewhere along the path to a patent there should be a step where an attorney for the USPTO goes head to head with the attorney for the inventor. You need to two people who speak the same language talking before the patent is ever issued. Lawyers for inventors have only one goal: GET THE PATENT. Maybe it’s a good goal and maybe the invention is awesome and patent-worthy. Or? Maybe the lawyer’s just a wordsmith and out-maneuvers the examiner with legalese and wears them down with all.the.words far too often. Just a thought.

Finally, I heard you mention that there might be an event of some kind in the near future, maybe something akin to the Patent Stakeholders Meeting almost a year ago? Having attended that event, might I make a suggestion or two? Like, maybe bring in some hors d’oeuvres? Cheese plate? Cash bar? On that last one, I’d like to heartily recommend the bartenders from Lincoln because can they make a 1931 Mai Tai or what?

It’s 5 o’clock somewhere…

All kidding aside, it sounds like a great step forward to bring some stakeholders back in and reprint the road map. The way to find out what people want and need, in this and any arena, is to actually talk to them.

I wish you the best of luck in the confirmation process, and hope that you’re able to accomplish all that you set out do!

You slay me, I AM. A while back you published this article about a study that came out, touting the damage that patent trolls do to start ups. OK, not necessarily start ups, but “entrepreneurial activity”. And not necessarily “patent trolls”, but NPEs/PAEs/Euphamisms-of-the-Month. But whatever, we all know what we’re talking about here and if you don’t, I have no idea what would land you on this blog other than a search for Big Derrieres. And if that’s the case, well then let me introduce you to Mr. Charles Barkley.

Note: Mr. Barkley is not a patent troll and even if he was I wouldn’t call him one because dude is huge, and I value my life.

I am not going to argue with the idea that VCs would have ploughed more money into certain companies if they had not been hit with lawsuits by PAEs. That seems pretty self-evident to me – VCs, like any other kind of investor, dislike uncertainty.

So we’re on the same page then, right?

Only no. No we are not, because he goes on to say:

However, what I did not see in the study is any evaluation of the merits of the cases brought by the PAEs Tucker writes about. Instead, I saw a few anecdotes about what seem like egregious cases, but nothing that demonstrated these were typical. It seems inarguable to me that PAEs willing to spend millions of dollars taking their cases to court when they cannot get someone to take a licence believe that their patents are being infringed and that they have a good chance of convincing the court to agree. Thus, it could just be that Tucker has spent her time and the CCIA’s money discovering that VCs are unlikely to sink money into companies whose products infringe patents. I could be wrong, of course; but we don’t know because Tucker does not look into it.

You’re forgetting something: With patent trolls, the merits of the case don’t matter. That’s sort of the whole point of all the railing against them. Whether the patent is invalid or infringement occurred matters not to the entrepreneur looking for money: once you’re sued by a troll you have to respond, and that eats time and resources that would have been better spent on things like growing a business and hiring employees. Tucker didn’t spend her time deconstructing the cases? Probably because she likes to spend it doing something worthwhile. Like making the point that patents can be used as a weapon to slow down start ups and innovation.

As for the patents themselves, Mr. Wild notes:

Furthermore, the patents that PAEs seek to license and are sometimes forced to litigate do not just appear out of the ether.

No they don’t. They appear out of the USPTO, who has clear issues with their patent examiners. See my three-parter here: Interview With a Patent Examiner Series. Sorry it sorts them Part III first. Dunno what’s up with WordPress on that…

I do agree with Mr. Wild on one thing though:

All in all, therefore, this study does not come close to making a case for legislative patent reform.

Right. Well, “right” in the sense that I don’t think patent reform is going to solve the patent troll problem. Certainly things are ripe for updating in the grand ol’ US of A patent system, like how examiners are vetted and hired and what skill sets they have and by that I mean you need to hire lawyers at the USPTO so they can fight off the lawyers that the companies hire to get their client’s stuff patented. I think we can agree on this.

Finally, I want to address this comment:

It might not be ideal, but it is a whole lot better than passing sledgehammer laws based on anecdotes and flawed research.

I’m aware that the plural of anecdote is not “data”. I’m also aware that all research is inherently flawed, if it’s done by humans, that is. We all bring a sense of bias to our research, I’m not sure that will ever not be the case. That doesn’t mean you throw it out and decide unilaterally not to make decisions based on it. Again, I agree that “sledgehammer laws” are stupid and ineffective but articles like Catherine Tucker’s highlight that the problem does in fact exist, even if it doesn’t delve into every level of detail that I AM would like to see.

In closing, though I like to make great sport of people who do not completely agree with me, I do want to say thank you for this:

None of this is to say that there are not problems and issues to address with regards to abusive patent litigation in the US, clearly there are.

There are real problems and real issues with patent litigation today.

I happen to think Ms. Tucker’s article does a great job of highlighting a specific one, even if you and Barry don’t agree with me.

Note: This is the third and final in a series of posts about my interview with a former Patent Examiner, who worked for the USPTO from 2000-2008. Read Part I here, and Part II here.

Despite suffering wicked withdrawals from a lack of black and whites, it’s good to be back home. Texas and I are going to have to talk about this 95 degrees in September thing, however, now that I spent time again in a place that has all four seasons instead of just two (hot and hotter). New York CIty? I love your Fall!

Back to work we go…it’s time to finish up the series from my interview with a former USPTO Patent Examiner with the most timeliest topic we discussed: software patents.

The sixth and tenth of my 10 questions were these:

6. What is your opinion on software patents, and the mantra that “computers do math and math is not patentable”?

10. Any general comments?

Software patents are all the rage now, or at least raging against them is. Your friend and mine Gene Quinn recently had a conniption fit wrote a blog post about how “intellectually dishonest” we all are for thinking that software patents are a problem at all, which was kind of odd. It was a fairly technical post and long about the time people start inserting pictures of computer guts, my attention span tends to fade. Nevertheless, I’m certain he has valid points, I just don’t know what they are.

The majority of the patent blogosphere and Twittosphere (which is to say “Twitter”) has major issues with software patents, and my examiner was no different. He laid the blame at the feet of patent claims, where he said

Software patents are for a processor with instructions and you can have the instructions to be anything. Because the process is intangible you can write anything into the claims. It becomes a word-smithing exercise. It’s based upon elements which I don’t think should be patented.

It’s too difficult to ask an examiner, because of the limitations on them including that they only search the database and not, for example, technical manuals, to make that call. It’s a lot harder for the claims to be examined.

The second paragraph goes back to his statement that the corpus of knowledge that patent examiners search for prior art is too limited. And that’s an issue…patents are slipping through the process because people aren’t looking in the right place for prior art, or because the filing attorneys have done such a good job with the wording of the claims that it’s just different enough to exiting patents that it will not get any direct hits when the patent database is searched. That’s a problem that has solutions (hello, Article One Partners!)

As for the first part, I agree with him that it’s a word-smithing game. When you look at some of the patents that are being litigated, the “auto-complete” patents, for example, how is that not obvious? One of the points my examiner made was that something may be non-obvious based on the fact that it hasn’t been patented before, or based on the fact that the applicant’s high-dollar attorney is telling you it’s a novel idea and not obvious because that’s what he’s been hired to do, or because you just didn’t talk to the right people.

My point being that particularly in the case of software patents, one conversation with a programmer and you’ll learn that, seriously? Auto-complete has been around in one form or another since 1991 because why? It’s obviously a useful feature. So how is it all of a sudden now a patent that anyone who writes websites has to have a license for or they’ll get thuggedout of existence?

That’s just dumb. Legal, but stupid.

If you don’t know who Martin Goetz is, watch this. What you’ll see is that the whole idea of software patents was born out of the fact that one company was giving away for free what another company wanted to charge for. I’d love to tie this into Mike Masnick’sthoughts on industry disruption, and how companies that write software could have found other ways to monetize what they’re doing rather than sue IBM and cause a ripple effect that years later, would bring start ups to their knees.

With regard to the tenth and final question of the interview, my patent examiner’s comments were a recap: give examiners access to a wider range of prior art search options to prevent bad patents from being issued, and find a way to draw attorneys into the job so that they can match wits and intellect with the applicants’ hired guns. He suggested that putting together a database of the text of technical manuals would be a good use of increased funding, and mentioned that Google was working on a project like that, or so he’d heard.

There you have it, straight from the horse’s mouth. The single biggest thing I learned is that Julie Andrews was right.

Let’s start at the very beginning, it’s a very good place to start. When you read you begin with A-B-C. When you sing you begin with Do-Re-Mi.

Issue good quality patents by having the right prior art search tools and the right mindset about what should be patentable and what shouldn’t (hint: not software), and you create an atmosphere where innovators can feel safe spending their years and their dollars dreaming up new products. The patent system was set up to encourage people to create something new and give them a time frame to be successful without the fear of others piggy-backing off their hard work.

Somewhere along the way, we lost sight of this basic idea, and it became all about the money and the weaponry employed by modern companies as they seek to wipe out the competition using any means available. I’m no kum-bye-ya (and hello? exactly how many ways are there to spell that??) hippie chick, I know that companies are not all going to just get along. But if we can fix some of the things that are going wrong at the USPTO, we can at least force a little bit of disarmament, no?

Note: This is the second in a series of posts about my interview with a former Patent Examiner, who worked for the USPTO from 2000-2008. Read Part I here.

In the first part of the series, the focus was on questions 1, 2, 4, and 5 which dealt mostly with the whole process of what happens to a patent application when it arrives in it’s cute little envelope at the USPTO, how the examiners are organized into coffee clatches groups, how the chain of command works, that sort of thing. Now it’s time to put your waders on for a deeper dive into the topics of Prior Art and examiner skill set, including salary information direct from the horse’s mouth. The horse, of course, being the publicly available government website that lists salary information. <— Answer to Question 9? Done and done.

The topic of most interest to me was that of prior art and the question I posed was this:

3. What tools do you use to search for prior art? Is a prior art search even really a major part of a patent application review, or is that expected to have taken place before the inventor files?

The answer provides a lot of insight into how those problem patents that the trolls exploit came into existence to begin with.

In answer to the first part of the question, my patent examiner said this, and I quote here just to make his answer stand out, it is not a verbatim direct quote but rather my piecing together of notes of the conversation, emphasis mine:

While I was employed at the USPTO, there were two search systems, called East and West. Examiners would choose which one they wanted to use. These systems searched only the patent database. Now days, most examiners use Google Patent Search, but again that searches only the universe of existing patents.

Prior art search then is 99% patent literature. So that is a huge lesson learned after leaving…technical manuals and publications need to be searched too.

Did you catch the bolded part?

My mind, like Russel Brand’s (if he has one?), is blown.

He did add that there is a “USPTO Library” of sorts where you can put in a request to have more searches done, outside the scope of existing patent literature. But that can take up to two weeks and is often done by people who are not well-versed in the area. Meaning, they are not experts in the subject matter like the examiners in a particular Art Unit are. Often the results that you’ve waited a few weeks for, potentially dinging you on your on-time deliverable metrics, are not worth it.

And speaking of those metrics again, this was interesting to note, again, not a verbatim quote:

One thing that is nice about only searching patent literature using existing systems is that the results are standardized. It is very easy then for the Primary Examiner or Supervisory Primary Examiner to review work done by less experienced examiners.

Convenience outweighs knowledge in this case: the USPTO would rather have the results be uniform than thorough. My paraphrasing, he didn’t actually say that. That’s what our tax dollars are paying for, right? Right. I guess?

With regard to the second part of the question about how much prior art search work is done before the application is sent in, there’s a little bit of politico going on there as well. The lawyers who submit these applications on behalf of their clients know that if they do a prior art search that is thorough and they find something, there goes the application (and the associated client fees). BUT, if they do only a cursory “good faith” review so that they can say they did it without being called liars, then the application has the possibility of getting approved because you can betcha dern tootin’ those attorneys know that the USPTO’s prior art search is really a prior patent search and won’t turn up much.

And we wonder why the patent system is in disarray.

The conclusion that my examiner came to was that finding prior art is not difficult. But what is difficult once a patent has been issued, is taking that prior art to the patent office and getting it to be reviewed to invalidate a patent. Which tells me that the prior art searching before the patent is even issued is where the USPTO needs to step up it’s game.

I have no idea what this is but 1) it’s gotta be a bad patent and2) I wish I had one in college.(#2 makes sense, think about it.)

Let’s circle back to the lawyers here for just a second, because it helps answer my Questions 7 and 8, which were as follows:

7. What would you change about the USPTO as it pertains to the number of examiners and their skill set?

8. Would more funding solve any of the problems that you now see at the USPTO

What my examiner said was this (my compilation from my notes once again):

Being on the outside now, when I have interviews with examiners I see that there is an intellectual drop off. They are smart engineering-type people but are not as well-spoken or persuasive as the lawyers arguing on behalf of the application. It would level the playing field to have examiners be lawyers.

To directly answer Question 8, he said that more funding to pay a higher salary to examiners with law degrees might help in the quest for better patent quality. They’d be able to speak the foreign language that is “lawyer”and therefore be less susceptible to the high-pressure tactics that patent lawyers sometimes use to push an application through.

They’d also be more aware, and this is my own personal perspective, of the prior art search capabilities that exist in the world outside the USPTO bubble. Look, it’s no secret that working for a government agency leads to tunnel vision. If you put some financial incentives in place for all those EE/JDs out there to transfer in from their God-awful 5th year “not-partner-material” Big Law position as a patent examiner, you might get someone with some real smarts behind the wheel of the patent issuing machine. Someone get Above the Law on the phone, I think I just solved their problem of so many disgruntled attorneys writing in to bellyache. You’re welcome.

Questions 7 and 8? Now also done and done.

I found this part of our conversation the most enlightening, because it really does speak to the lowest common denominator which is bad patents. Now, I will always contend that patent trolls will take patents and use them as a stick to beat people with no matter how good or bad any one patent is, because they get their kicks going thug on the little guy; they’re going to extort higher fees than necessary using those patents and do it from people who aren’t even infringing but can’t fight the charges. So don’t think for one second that I’m going soft on what the trolls’ business model really is.

But because there are so many patents out there that should never have been issued to begin with, it makes absolute sense to take a look at how that happened and what potential preventative solutions are out there.

In the final installment, we’ll tackle the subject of software patents. There are those who would contend that they are not a problem at all (Gene Quinn, I’m looking at you), but many would disagree. In Part III, we’ll let my former patent examiner weigh in!

Admit it, you thought I was going to say “Interview With A Vampire”, didn’t you? Well, here’s some news for you: I don’t do vampires. Or spiders. Or Tom Cruise movies, but I digress. As usual.

But what I do do, or rather did, is interview a patent examiner. Actually, he is a former examiner, having worked in the USPTO from 2000-2008. I had a list of questions prepared, and we spoke on the phone for over an hour, and this and probably at least one other post is the result of our discussion.

With all the talk of patent quality right now, it occurred to me that other than purchasing Patents For Dummies lo those many moons ago (and then not actually reading it), I had never done much to understand how something comes to be patented in the first place. Turns out, what I learned was every bit as life-changing as when I discovered that I could teach my kids could to fix me my dinner. Goodbye, in-home chef! (Kidding, he lived in the garage.) I think it’s crucial to understand what happens when a patent is applied for, and the circumstances surrounding when that application comes in, because it matters.

It’s fortunate that the time frame my subject was employed was during the time that software patents became en vogue. Sometimes, I’m lucky that way and all the stars align.

Although the A’s don’t corrolate exactly with the Q’s because it was a fairly free-flowing conversation, here are the questions I asked:

What does a typical day look like for a patent examiner? Do you arrive at the office with a queue of patents and just churn through them?

Are you given a quota of patents that you have to review? Are there percentages that are expected to be granted vs. rejected that you must adhere to, similar to what people think goes on with cops and traffic tickets?

What tools do you use to search for prior art? Is a prior art search even really a major part of a patent application review, or is that expected to have taken place before the inventor files?

What is your opinion on software patents, and the mantra that “computers do math and math is not patentable”?

What would you change about the USPTO as it pertains to the number of examiners and their skill set?

Would more funding solve any of the problems that you now see at the USPTO?

Any general comments

Are your results vetted by other examiners, meaning do you ever work in groups to review an application or is it always just one on one, one examiner per application?

In a standard work month (i.e. no holidays), how many patent applications did you review on average during your tenure?

Are you paid a salary, or paid by the number of applications you review and/or approve?

Without further ado, lets get to the meat and potatoes. Questions 1, 2, 4, and 5 were sort of lumped together in our discussion and a picture began to emerge about how the USPTO is set up.

What you have is an “intake office”, where the applications are initially received. They are given a precursory review, and lumped into categories, or Art Units. Art Units are groups of 10-12 examiners who review applications that cover a specific subject matter area. The Art Unit my examiner belonged to dealt with biomedical devices and technologies, things like the machine used to cauterize errant electrical pathways in the heart for people with Wolff-Parkinson-White syndrome. Like my 10 yr old son who just went through this procedure and boy am I glad those patents were approved because Holla! The boy is fine now.

Aaaaanyway, each Art Unit is headed up by a Supervisory Primary Examiner. This is the person responsible for the work of all Primary and Junior examiners in his or her Unit. To back track a little, when you first arrive at your new job as a Patent Examiner, you are essentially given the title of “Junior Patent Examiner”. You’re assigned to an Art Unit and for the first six months or so of employment, your work is reviewed by a Primary Examiner. (This becomes important in later parts of the interview because it matters who you go to. ) Here’s a graphic for you visual learners out there:

Each examiner, Junior or Primary, as the Primary Examiners have their own docket of applications in addition to the ones they review and sign off on for the Junior Examiners, has a queue of 6-12 months worth of applications. You work your queue based on what stage the application is in, and when it’s due date is. So for example you might have a few applications where you need more information from the applicant, or you need to do some research on the technology, etc. As a matter of work flow practice, the examiner I interviewed would work on those items together. In other words, it’s not a process where an examiner sticks with one application all the way through the process and only when it is stamped GRANTED or REJECTED does he/she move on to the next one. It’s a very iterative process and examiners sort of set their own pace to work through the queue and meet the individual deliverable deadlines.

To that end, my interview subject pointed out that there is not a lot of interaction amongst the examiners. Each sort of works in a bubble, coming out when they need to get approval for something and then move on. Additionally, many are working on their law degrees at night…this is not a party office environment where people are discussing their applications, going over claims and sharing knowledge with others. It’s a silo farm. This isolation, if you will, was increased when the USPTO began a work-from-home initiative (I can feel Marissa @ Yahoo rolling her eyes) and the examiners rarely occupied the same physical space.

Each examiner may have 5-6 deadlines within a two-week period, but no actual quota of applications that have to be completed within a given time frame. And to that point, there is no metric that says a specific percentage of applications in your queue must be granted or rejected. Performance is judged not as much on the quality of the work, as it is on the percentage of available work performed on time. It is a deliverables-based metric, essentially, and you get points for each deliverable that you meet. If the percentage of earned points available in a given time period falls below the acceptable range (95 to 110% of available points kept you out of trouble) then you are visited by the Supervisory Primary Examiner. Note: in the South, we use the word “visit” as a euphemism for ass-whooping, as in “Frank? I need to visit with you about your internet usage on company time…”

The Art Units convene every six weeks or so to review processes and go over any procedural issues and discuss the productivity of the unit as a whole. I’m not sure if there’s competition between Art Units, but if I were an SPE I would totally use my powers of motivation by saying “Seriously guys? Those people in Heavy Farming Equipment are eating our lunch. We’re Biomedical Devices, y’all…let’s show ’em what we’re made of!!” But I have no confirmation from my source that that sort of thing ever actually happened. The meetings were probably more about the TPS reports and who brings the best donuts. Nevertheless, regular meetings were part of the process, is the point I was making.

I don’t think it would be fair to say that quality work doesn’t matter at all to the USPTO, I want to be clear on that. But from the conversation I had, it appeared that it was more about getting acceptable work done in an acceptable range of time. This is a point I’ll address in the next installment when we answer questions 3, 6, and 7.

Now that we understand the background of what a USPTO examiner does and how the process of approval works at a 10,000 foot level, we can move on to things like patent quality, software patents, and what changes could potentially be made that would make the most difference in the fight against patent trolls. The goal for me in understanding this process was to figure out if there was something awry, something that was aiding and abetting these patent trolls as they go about wreaking havoc on American businesses. I think the next few installments coming this week will shed some light on that.